The GOOGLE Mark Isn’t Generic–Elliott v. Google (Forbes Cross-Post)

The “Google” trademark regularly ranks as one of the most valuable trademarks in the world. In 2011, Forbes estimated the trademark’s value at $44B, and a more recent estimate placed the value at $113B. Almost certainly, the “Google” trademark is Google’s single most valuable asset. Recently, Google’s opponents in a court case claimed the trademark had become “generic,” so everyone could freely use it without restriction. Fortunately for Google, the court decisively rejected the challenge, confirming that “Google” remains a valid and protectable trademark.

The Ruling

Trademarks protect a word or logo’s ability to identify the associated product’s source. When a product’s name or logo becomes associated with its class of goods, instead of one specific product in the class of goods, we say that the word or logo has become “generic” and has permanently lost all trademark protection. Over the years, many great trademarks have become generic, such as escalator, aspirin and yo-yo. (Xerox and Kleenex are two trademarks that are probably still protected but have been teetering on the cusp of genericism for years).

Google’s opponents contended that “the GOOGLE mark has become generic because a majority of the public understands the word google, when used as a verb, to mean the indiscriminate act of searching on the internet without regard to the search engine used.” The court identifies two major problems with this assertion.

First, even if consumers use a trademark as a verb to describe an action taken with competitors’ offerings, the trademark is still protectable if consumers associate the noun with one offering. In this case, even if consumers use “to Google” to describe online keyword searching generally, Google still can have a trademark if consumers associate the noun with just one search engine.

Second, the opponents’ evidence about consumers’ understanding wasn’t very good. The opponents’ lawyer did his own consumer survey, which the court completely disregards as unscientific. The lawyer also hired a survey expert, but his survey was poorly constructed and Google’s lawyers eviscerated the report in cross-examination and rebuttal. Meanwhile, Google introduced its own consumer survey showing 94% of consumers identified Google as a brand name and only 5% identified it as a common word.

The court summarizes:

The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.

The courts say that even if Google’s opponents proved that a majority of consumers understand definition #3 (Google as a verb for Internet searching), Google showed 90%+ of consumers understand definition #1 (Google designates its own search engine), so the term Google still functions as a source designator. As the court concludes, the “undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.”

Implications

When they first launch, many Internet entrepreneurs dream of a day when their service’s trademark becomes generic. After all, that means they’ve reached the big-time, where everyone knows the service’s name and thinks of that name first. The reality is that trademark genericide means the company loses control over the name; it can’t suppress spammers, third party developers or competitors from doing whatever they want with the name. Usually, starry-eyed entrepreneurs eventually wake up and realize that genericism of their trademark is worth fighting against. The lawyers hope that epiphany doesn’t come too late.

In contrast, Google has known for a long time that its dominating success created a risk that its trademark would become generic. Thus, Google has proactively tried to avoid that outcome, including convincing dictionary authors to treat the term “Google” as a trademark, not a generic noun or verb. Indeed, Google’s opponents asserted that Google “intimidated” dictionary authors, but to no avail.

The court’s ruling that a verb usage of a trademark doesn’t automatically undermine trademark protection helps many other companies too. The “Do You Yahoo?” campaign is an example where a trademark owner affirmatively encouraged verb usage of its trademark. By indicating that verbing doesn’t automatically trademark genericide, the court’s ruling should help other trademark owners relax a little.